New York Stock Exchange demands trademark trial
The New York Stock Exchange (NYSE) has accused a financial advisory company called New York Shell Exchange of unfairly trading with an identical name to its registered trademarks and diluting its “famous” brand.
In a lawsuit filed on Monday, August 17, at the US District Court for the Eastern District of New York, the NYSE requested a jury trial to determine whether the New York Shell Exchange has infringed its trademarks.
Operating since 1792, the NYSE claims to be the “best known exchange in the world”. The NYSE has a market capitalisation of more than a trillion of dollars, it said in its complaint.
Since 1863, the NYSE has used the terms ‘NYSE’ and ‘New York Stock Exchange’ in connection with “conducting securities exchange”. The organisation also holds registered US trademarks for the phrases.
The NYSE said in the lawsuit that its marks are ‘famous’.
Under US law, an owner of a ‘famous’ trademark is entitled to relief against a party that “commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution of the famous mark, regardless of the presence or absence of actual or likely confusion”.
According to the lawsuit, Patrick Giordano and William Hayde allegedly started infringing the ‘NYSE’ mark in 2012 as well as using the “colourable imitation” of New York Shell Exchange.
The New York Shell Exchange gives financial advice to its customers by providing the “necessary resources to find, buy, or sell publicly traded companies”.
The allegedly infringing marks have also been used on the company’s LinkedIn and Twitter pages.
Giordano and Hayde also own the registration to the domains newyorkshellexchange.com and nyshellexchange.com.
At the time of writing the websites are parked Whois records state that the domains are inactive.
In 2013, the NYSE sent a cease-and-desist letter to Giordano and Hayde. Another letter was sent in June 2015.
According to the complaint Giordano responded to the second letter and said that he had removed any NYSE references from the company's web pages and that he would “entertain an offer” for the domains.
The NYSE has asked the court to find that the New York Shell Exchange wilfully infringed the marks and is liable for cybersquatting.
It is also asking that any material bearing the allegedly infringing marks be destroyed.
The NYSE declined to comment on the case.
